Ex Parte Iseberg et al

Patent Trial and Appeal BoardNov 2, 2018

14868814 (P.T.A.B. Nov. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/868,814 09/29/2015 23446 7590 11/06/2018 MCANDREWS HELD & MALLOY, LTD 500 WEST MADISON STREET SUITE 3400 CHICAGO, IL 60661 FIRST NAMED INVENTOR Steve Iseberg UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. 23970US03 6669 EXAMINER CERIONI, DANIEL LEE ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 11/06/2018 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): mhmpto@mcandrews-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVE ISEBERG, MEAD C. KILLION, JONATHAN SIEGEL, SUMITRAJIT DHAR, VIOREL DRAMBAREAN, DAN MAPES-RIORDAN, and STEVE VIRANYI 1 Appeal2017-008676 Application 14/868,814 Technology Center 3700 Before FRANCISCO C. PRATS, JOHN G. NEW, and RYAN H. FLAX, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify Etymotic Research, Inc. as the real party-in-interest. App. Br. 2. Appeal2017-008676 Application 14/868,814 SUMMARY Appellants file this appeal under 35 U.S.C. Â§ I34(a) from the Examiner's Final Rejection of claims 23, 24, 27-39, 41, and 42. Specifically, claims 23, 27-30, 32, 37-39, 41, and 42 stand rejected as unpatentable under 35 U.S.C. Â§ I02(b) as being anticipated by McMahon et al. (US 2009/0321177 Al, December 31, 2009) ("McMahon"). Claim 24 stands rejected as unpatentable under 35 U.S.C. Â§ I03(a) as being obvious over the combination of McMahon and Stone (US 6,368,289 B2, April 9, 2002) ("Stone"). Claims 31 and 33-36 stand rejected as unpatentable under 35 U.S.C. Â§ I03(a) as being obvious over the combination of McMahon and Dolphin et al. (US 2007/0161924 Al, July 12, 2007) ("Dolphin"). 2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE and enter NEW GROUNDS OF REJECTION. NATURE OF THE CLAIMED INVENTION Appellants' invention is directed to a hearing testing probe apparatus including a probe tube detachably coupled at a first end to a probe body and extending through a central hole in an eartip to align proximate a face of the eartip at a second end. Abstract. REPRESENTATIVE CLAIM Claim 23 is representative of the claims on appeal and recites: 2 The Examiner also rejected claims 23, 24, 27-39, 41, and 42 as unpatentable under 35 U.S.C. Â§ 112, second paragraph as indefinite. Final Act. 3. The Examiner has withdrawn the rejection. Ans. 10. 2 Appeal2017-008676 Application 14/868,814 23. A probe tube comprising: a first end; a second end; a plurality of stimulus lumens extending from the first end to the second end of the probe tube and being configured for receiving and carrying a stimulus from the first end of the probe tube for output at the second end of the probe tube, and at least one microphone lumen extending from the first end to the second end of the probe tube and being configured for receiving and carrying at least one measured response from the second end of the probe tube to the first end of the probe tube. App. Br. 44. ISSUES AND ANALYSES We decline to adopt the Examiner's findings of fact, reasoning, and conclusion that the appealed claims are prima facie anticipated by the combined cited prior art, and we enter new grounds of rejection. We address the arguments raised by Appellants below. A. Rejection of claims 23, 27-30, 32, 37-39, 41, and 42 under 35 U.S.C. Â§ 102(b) Issue Appellants argue that the Examiner erred in concluding that McMahon discloses Appellants' claimed probe tube. App. Br. 9. 3 Appeal2017-008676 Application 14/868,814 Analysis The Examiner finds that Figures 2A and 5B of McMahon depict a probe tube 100 with a plurality of stimulus lumens 106, 110, 504 extending from the first end to the second end of the probe tube and being configured for receiving and carrying stimulus from the first end of the probe tube for output at the second end of the probe tube. Final Act. 4 ( citing McMahon ,r,r 92, 102). The Examiner further finds that the same Figures also disclose at least one microphone lumen 105, 111, 505 extending from the first end to the second end of the probe tube and configured for receiving and carrying at least one measured response from the second end of the probe tube to the first end of the probe tube. Id. Figure 2A of McMahon is reproduced below. Figure 2A of McMahon depicts a cutaway side view of one exemplary embodiment of the tip for coupling sound between a medical instrument and an ear Appellants argue that element 100 of McMahon is an eartip, and not a probe tube. App. Br. 10 ( citing McMahon ,r,r 92-93). Appellants assert that their Specification explicitly and repeatedly describes the probe tube 30 as a different component than an eartip 20. Id. (comparing Spec. Abstr., ,r,r 26], 4 Appeal2017-008676 Application 14/868,814 30-37, 42, 44--54, 56-66, 79--101, Figs. 3-17 (element 30) for "probe tube", with Abstr., ,r,r 10, 12, 14, 34, 35, 42, 48, 55-59, 61, 62, 64--66, 79, 80, 82- 84, 97, 99, 101, Figs. 3-5, 9, 14, and 15 (element 20) for "eartip"). Appellants point to Figure 5 of their Specification as demonstrating that probe tube 30 is a physically distinct component from eartip 20. App. Br. 11. Figure 5 is reproduced below: \ fo Figure 5 of Appellants' Specification depicts an exploded side view of an exemplary embodiment of a hearing testing probe Appellants also point to Figures 14 and 11 in support of their contention that the eartip 20 is a physically distinct from the probe tube 30. App. Br. 11-12. Appellants therefore argue that a person of ordinary skill in the art, having read Appellants' Specification, would not confuse a probe tube with an eartip. App. Br. 13. Moreover, Appellants assert McMahon does not disclose that element 100 is a "probe tube," or any kind of tube. Id. Rather, Appellants assert, McMahon discloses that "the tip includes an acoustic tube," which, Appellants state, is referred to throughout McMahon as 5 Appeal2017-008676 Application 14/868,814 element 101. Id. (citing McMahon Abstr., ,r,r 92-95, 110, Fig. 2A). Appellants note that, in Figure 2A of McMahon, the acoustic tube 101 does not comprise a plurality of stimulus lumens and at least one microphone lumen. Id. Rather, Appellants argue, McMahon discloses that acoustic tube 101 defines a first acoustic path that may be configured as either a path of acoustic transmission or acoustic detection. Id. ( citing McMahon ,r 30). Appellants therefore argue that the acoustic tube 101 does not disclose Appellants' claimed probe tube comprising a plurality of stimulus lumens and at least one microphone lumen. We agree with Appellants that element 100 of McMahon, as disclosed in Figure 2A, does not correspond to the probe tube 30 of Appellants' Specification or claims. Figure 2A of the Specification reveals that the probe tube 30 is physically distinct from the ear tip 20 of Appellants' invention. Furthermore, paragraph [0056] of Appellants' Specification states that: The probe tube 30 is configured for use with an eartip 20, such as industry-standard elastomeric eartips 20, single-use disposable eartips 20, or any other suitable eartips 20. The probe tube 30 has an outer diameter. In various embodiment, the outer diameter of the probe tube 30 is appropriate to mate and seal with the central channel found on industry-standard elastomeric eartips 20 and the like, such that the probe tube 30 provides compatibility with many of the eartips 20 that users of the hearing test probe 10 may prefer. Certain embodiments provide for use of single-use disposable eartips 20. The single-use eartip 20 may be bonded directly to the probe tube 30 to provide a single disposable assembly, as illustrated in FIG. 15, for example. We agree with Appellants that element 100 of McMahon does not disclose the probe tube 30 of Appellants' independent claims 23 and 38. 6 Appeal2017-008676 Application 14/868,814 Moreover, because we find that, because the Examiner expressly relies upon McMahon's element 100 as disclosing or teaching the claimed probe tube, the prior art rejections of the remaining dependent claims on appeal fall with the rejection of the independent claims. NEW GROUNDS OF REJECTION We here enter new grounds of rejection. Independent claims 23 and 38 are rejected under 35 U.S.C. Â§ 102(b) or, alternatively, under 35 U.S.C. Â§ 103(a), as being either anticipated by, or obvious over, McMahon. McMahon discloses an embodiment of its invention in Figure 5B, which is reproduced below: . .LOO FIG.58 Figure 5b of McMahon depicts a detailed cutaway side view of an exemplary front end and tip Contained within the embodiment depicted in Figure 5B illustrates element 503, which is described by McMahon as a "central core" and which is physically distinct from eartip 100, also shown in the figure above. 7 Appeal2017-008676 Application 14/868,814 Central core 503 is depicted in more detail in Figures 6A-6C of McMahon; Figure 6A is reproduced below: -506 504 AG,6A 602 504 Figure 6A of McMahon depicts a perspective view of an exemplary central core of a tip including a stem section The central core 503 of this embodiment disclosed by McMahon is enclosed within the eartip (i.e., 501, as argued by Appellants), has a tubular lower section 602 which: "includes a set of channels 504 which extend the speaker and pressure channels 110 from tip 100 openings 106 as well as extending the microphone channel 505 from microphone channel 111 within tube 110 of tip 100 to tip 100 opening 105." McMahon ,r 102. Thus, McMahon has two lumens for transmitting sound (i.e., 504) and at least a microphone lumen for receiving sound (i.e., 504). We recognize that the central core 503 of McMahon also has a stem section 506, which extends the microphone channel 505 (i.e., the "microphone lumen") beyond the second end of the tube 602. However, the language of claims 23 and 38 uses the transitional term "comprising," which 8 Appeal2017-008676 Application 14/868,814 does not exclude additional elements not recited in the limitations of the claim. See Crystal Semiconductor Corp. v. Tri Tech Microelectronics Int 'l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001) (holding that use of the transition "comprising" in the language of a claim creates a presumption ... that the claim does not exclude additional, unrecited elements). Central core 503 thus falls within the scope of the claims on appeal. We consequently conclude that McMahon discloses: a probe tube comprising a plurality of stimulus lumens extending from the first end to the second end of the probe tube and being configured for receiving and carrying a stimulus from the first end of the probe tube for output at the second end of the probe tube, and at least one microphone lumen extending from the first end to the second end of the probe tube and being configured for receiving and carrying at least one measured response from the second end of the probe tube to the first end of the probe tube as recited in the independent claims. We consequently reject independent claims 23 and 38 under 35 U.S.C. Â§Â§ 102(b) or 103(a) as being anticipated by or, alternatively, obvious over, McMahon. We have entered the new grounds for only the independent claims and leave it to the Examiner to evaluate the patentability of the other claims in view of this reference alone or in combination with other newly found or previously cited references. DECISION The Examiner's rejection of claims 23, 27-30, 32, 37-39, 41, and 42as unpatentable under 35 U.S.C. Â§ 102(b) is reversed. 9 Appeal2017-008676 Application 14/868,814 The Examiner's rejection of claims 24, 31, and 33-36 as unpatentable under 35 U.S.C. Â§ 103(a) is reversed. We have also entered a new ground of rejection under 37 C.F.R. Â§ 4I.50(b) for independent claims 23 and 38 pursuant to 37 C.F.R. Â§ 4I.50(b). 37 C.F.R. Â§ 4I.50(b) provides that "[a] new ground of rejection ... shall not be considered final for judicial review." 37 C.F.R. Â§ 4I.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the exammer .... (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same record. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l ). See 37 C.F.R. Â§ 1.136(a)(l)(iv) (2010). REVERSED 37 C.F.R. Â§ 4I.50(b) 10